Class 7: Novelty Patent Law Spring 2007 Professor Petherbridge

Patentability A Description that Complies with § 112 Is Novel § 102 Avoids the so-called Statutory Bars § 102 Is Nonobvious § 103 Is made by the listed Inventor(s) § 116 Is useful § 101 Is statutory subject matter § 101

Novelty and § 102 Section 102, A person shall be entitled to a patent unless... –Sections (a), (e), and (g) deal with Novelty Section (f) addresses “derviation” –Sections (b), (c), and (d) deal with the statutory bars—or loss of right provisions

Overview Finish 102(a) 102(e) 102(f)-derivation 102(g)

Invention The Patent System: A life ProsecutionEnforcement ApplicationIssue Expiration 20 Years

§ 102(a) Section 102, A person shall be entitled to a patent unless... (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or...

§ 102(a) Section 102, A person shall be entitled to a patent unless... (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or...

§ 102(a) Section 102, A person shall be entitled to a patent unless... (a) the invention was... patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or...

Jockmus v. Leviton What is the alleged prior art here? What is the legal standard for “printed publications” How many copies should be distributed? Does it matter that catalogs are typically discarded in a short period of time?

In re Hall What is the issue in this case? What is the legal standard? On what date is a publication publicly accessible? Would a confidential, yet widely internally distributed document be a “printed publication?”

Reeves Bros. v. US Is the GM not a “printed publication?”— Why? What makes the GM a patent? What information does the GM bring to the anticipation analysis?

Alexander Milburn Co. v. Davis- Bournonville Co. What happened in this case? Does Whitford know of the Clifford invention when he conceives and files? Why is Whitford not entitled to a patent?

§ 102(e) Section 102, “A person shall be entitled to a patent unless... (e) the invention was described in (1) an application for patent, published under section 122 (b), by another filed in the United States before the invention by the applicant for patent or122 (b)

§ 102(e) Section 102, “A person shall be entitled to a patent unless... (e) the invention was described in... (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or351(a)

§ 102(f) Section 102, “A person shall be entitled to a patent unless... (f) he did not himself invent the subject matter sought to be patented,...

Campbell v. Spectrum Automation Who is the patentee/alleged infringer/ what is their relationship? Why does the court spend so much time discussing the quality of the corroborating evidence?

Campbell v. Spectrum Automation Who is the patentee/alleged infringer/ what is their relationship? Why does the court spend so much time discussing the quality of the corroborating evidence?

§ 102(g) Section 102, “A person shall be entitled to a patent unless... (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

§ 102(g) Section 102, “A person shall be entitled to a patent unless... (g) (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it....

§ 102(g) Section 102, “A person shall be entitled to a patent unless... (g)... In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

§ 102(g) Section 102, “A person shall be entitled to a patent unless... (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

Townsend v. Smith What is going on in this case? What does the evidence show concerning Townsend’s activities? What is the legal standard for conception? Who wins this interference and why?

Christie v. Seybold When did Seybold file his application? When did he conceive/RTP? When did Christie conceive/RTP? What is the legal standard for determing who here has the right to the patent?

Christie v. Seybold How do we know if there has been “reasonable diligence?” Who needs to prove it? Did Seybold exercise “reasonable diligence”, what are his excuses for delay? What could he have done?

Priority hypos Who wins when two inventors simultaneously RTP? Who wins when two inventors simultaneously conceive? Who wins when there is simultaneous conception and simultaenous RTP? Why?

Peeler v. Miller What is the invention directed to? Who is the first to conceive? RTP? Who was the first to file? What is the reason for Miller’s delay? Why does the court concern itself with when Miller RTP’d?

Peeler v. Miller Is Miller entitled to a patent? What happens if a person RTPs, then abandons, and then returns to the invention and proceeds to work towards its patenting? Can they still get a patent?

§ 102(g) Section 102, “A person shall be entitled to a patent unless... (g) (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it....

Dow Chem. v. AVI What happened in this case? What are Dow’s arguments? In what circumstances is a court likely to find that an inventor abandoned suppressed or concealed? What delays are acceptable?

Assignment , Class 8, Priority , then Statutory Bars read pp , 35 U.S.C. § 102(b).